In proceedings under the Merchandise Marks Act, 1862, Merchandise where it is necessary to allege or mention an intent to defraud, or to enable another to defraud, it is sufficient to allege or mention that the defendant acted with intent to defraud or to enable some other person to defraud, without alleging an intention hostile to any particular person (a). The question of fraudulent intention is for the jury, Questions for jury. with whom it rests to say whether or not such intention is proved by the evidence before them (b). And the plaintiff's pleadings must allege with sufficient distinctness a false representation on the part of the defendant (c), when it will be left to the jury to say whether the defendant has adopted the particular mode of deceit charged (d). be injured. In order to entitle the plaintiff to recover, it must be Plaintiff must shown that the defendant's conduct has injuriously affected the plaintiff, and the plaintiff's pleadings must be so framed as to disclose a sufficient cause of action, so that where a banking business was established in London under the same name as a previously existing bank, it was held that the proprietor of the earlier bank could not recover, since he had not averred that he was a banker or had ever carried on a banking business (e). This case was decided on the same principle on which it was held in the Court of Chancery, that there was no infringement of trade mark unless there was actually in the market a vendible article to which the mark was in some way attached, and that no right to an injunction existed before the article had in fact been produced, even though it had been repeatedly advertised, and considerable outlay so incurred (f). By section 22 of the Merchandise Marks Act, 1862, Merchandise every person aggrieved" by the forgery of a trade mark, (a) 25 & 26 Vict. c. 88, § 12. (b) Crawshay v. Thompson, 4 Man. & G. 357; Rodgers v. Nowill, 5 C. B. 109. (c) Morison v. Salmon, 2 Scott, N. R. 449; 2 Man. & G. 385. (d) Rodgers v. Nowill, 5 C. B. 109. C. B. 84. (f) McAndrew v. Bassett, 33 L. J. Ch. 561; Maxwell v. Hogg, L. R. 2 Ch. 307. Marks Act. H Costs incurred by defendant's fraud recovered from him. Innocent vendor of marked. or use of a forged trade mark, is entitled to maintain an action for damages for the injury done him by the wrongful act, and for an injunction to prevent the repetition or continuance of the same or a similar act. Where A. ordered from B. a quantity of fire-bricks, marked with the name of C., who used it as his own trade mark, and the order was being executed by B. in ignorance of C.'s rights, C. filed a bill in Chancery to restrain B., who compromised the matter on paying a sum amounting in all, including costs, to over £200. On B. bringing an action against A. to recover the sum which he had so been compelled to pay, it was held by the Court of Queen's Bench that he was entitled to recover that sum, C. being entitled to an injunction in Equity on mere proof of the imitation, though at Common Law he would have had to prove fraud on the part of B. (a). It has been held in America that an innocent vendor of goods falsely goods falsely marked, the genuineness of which he has not warranted, is entitled to maintain an action to recover the price of the goods from a person to whom he has sold them (b). Damages. Although it cannot be assumed by the Court, in default of evidence, that the same quantity of goods which a defendant has sold under a trade mark imitated from that of the plaintiff would have been sold by the plaintiff, but for the defendant's unfair competition (c), yet, where the whole profit made by an infringer upon the sale of the goods wrongfully marked was awarded by the jury as damages, the American Court held that this was not excessive, and said that the fact that it was impossible to apportion the profit, rendered it just that the infringer should lose the whole (d). And in Taylor v. Carpenter (e), when the defendant, against whom a verdict had been (a) Dixon v. Fawcus, 3 Ell. & Ell. 537. (b) Rudderow v. Huntington, 3 Sand. S. C. 252, R. Cox, 106. (c) Leather Cloth Co. v. Hirschfeld, L. R. 1 Eq. 299. (d) Graham v. Plate, 40 Cal. 593, 6 Amer. Rep. 639. (e) 2 Wood. & M. 1 ; 9 L. T. (Old Series) 514, R. Cox, 32 ––42. found with substantial damages, moved for a new trial, urging, among other arguments, that the jury should have been told that if the defendant's goods were not inferior to the plaintiffs', the latter could not recover, or at all events could recover only nominal damages, it was held that the plaintiffs were not only not debarred from recovering at all, but that they could recover substantial damages, "since the actual damage suffered by loss of sales by the plaintiffs, which was the ground of recovery, was just as great as if the thread had been inferior, though the credit of their mark and thread might not suffer as much thereby, if it did at all." Nominal da mages where That a plaintiff is entitled to recover some damages where his trade mark has been infringed, appears clearly right infrom Blofeld v. Payne (a), in which Lord Denman, C.J., told fringed. the jury that even if the defendants' hones were not inferior, the plaintiff was still entitled to some damages, inasmuch as his right had been invaded by the fraudulent act of the defendants. The jury found a verdict for the plaintiff, with a farthing damages, and also found that the defendants' hones were not inferior to the plaintiff's. The verdict was upheld by the Court of King's Bench, Littledale, J., saying that "the act of the defendants was a fraud against the plaintiff, and that even if it occasioned him no specific damage, it was still, to a certain extent, an injury to his right." It is evident that in this case, although the plaintiff did not suffer in reputation by the sale of inferior hones as his, yet he suffered in another way, his custom being diminished to an undetermined extent by goods being sold as his, so as to compete with those really of his make (b). The first recorded case of trade mark brought before the Equity R. Cox, 82; Lemoine v. Ganton, 2 E. Hill. Blanchard v. judicial notice of the Court of Chancery was that of Blanchard v. Hill (a), in 1742, which, however, resulted in a statement by Lord Hardwicke, C., that he did not know "any instance of granting an injunction in Chancery to restrain one trader from using the same mark with another," and that he thought "it would be of mischievous consequence to do it." Growth of jurisdiction In Henry v. Price (1831) (b), and Gout v. Aleploglu of Chancery. (1833) (c), however, injunctions were granted to restrain the infringement of the plaintiffs' trade marks, and from this time the steadily increasing number of such cases coming before the Court of Chancery shows the growing favour with which that Court was regarded by suitors, the chief incentive no doubt being the more beneficial character of the remedy awarded, by injunction and account, as compared with the Common Law remedy of damages. By degrees the Court of Chancery absorbed the jurisdiction in trade-mark cases, until such cases were rarely if ever tried in the Common Law Courts, except when they were remitted for trial of the Common Law right by a Chancery judge. That practice was discontinued in consequence of Sir John Rolt's Act (d), and the effect has been, notwithstanding the extended power given to the Common Law Courts by the Merchandise Marks Act of the same year (e), to confine the consideration of this class of cases more strictly, if possible, than before to the Court of Chancery. This fact has been recognised by the Chancery Division being appointed to administer the Trade Marks Registration Acts (f). Registration Commis- The registrar appointed under the Acts is, however, subject to the superintendence of the Commissioners of Patents (g), the extent of whose jurisdiction is not yet (a) 2 Atk. 484. (b) 1 Leg. Obs. 364. (c) 5 Leg. Obs. 496, and 6 Beav. 69 n.; and see Day v. Binning, C. P. Cooper, 489; and 1 Leg. Obs. 205. (d) 25 & 26 Vict. c. 27. (f) 38 & 39 Vict. c. 91; 39 & 40 Vic. c. 33; and 40 & 41 Vict c. 37. See Rule 42. (g) Rule 68. * clearly ascertained, though it may be presumed that cases of difficulty will be reserved for the consideration of the Court (a). The principles on which the Courts of Equity have long acted in cases of true trade mark, i. e., where a valid mark has been affixed to the goods or to wrappers or vessels containing them-principles by which those cases must, as it seems, be governed for the future, before whichever branch of the High Court of Justice they may come (6)—are thus explained by Sir G. Jessel, M.R., in Singer Manufacturing Co. v. Wilson (c). "It is quite immaterial that the maker of the goods to which what I will call, for sake of shortness, the trade mark is affixed, did not know that it was a trade mark, and had not the slightest intention of defrauding anybody. He must not put as a mark on goods, even though he intends to establish it as his own trade mark, that which is the known trade mark of other people, and he would be restrained by injunction, though he thought he himself had invented the trade mark, and bond fide intended it to designate goods of his own manufacture. And the reason is obvious, because the goods pass from hand to hand, and though he may act with the utmost bonâ fides, yet the ultimate purchasers might believe that they were the real goods, that is to say, that they were manufactured by the person entitled to the original trade mark. Therefore, in that case, knowledge that he is doing anything wrong is immaterial, even in the maker. "Another element which is sometimes imported into these cases has also no material bearing; that is, that if the maker knows that they are not the goods of the person entitled to use the trade mark, and communicates that knowledge to the immediate purchaser, it makes, as I have (a) See In re Meikle, 24 W. R. 1067; and In re Barrows, L. R. 5 Ch. D. 353. (b) See Judicature Act of 1875, § 25. (c) L. R. 2 Ch. D. 434. Principles adopted in Equity with respect to trade marks. |